All Things Pros focuses exclusively on patent prosecution. The blog uses PTAB decisions, and the prosecution history that led to appeal, to discuss good and bad strategies for handling 102, 103, 101 and 112 rejections. Claim construction using Broadest Reasonable Interpretation is also a major focus. And sometimes you'll find prosecution topics such as after-final, RCE, and restriction practice.

Tuesday, March 20, 2012

Takeaway: In rejecting claims to a fireplace accessory as obvious, the Examiner found that the claimed placement of a hinged door was a "matter of design choice" and that "it would be obvious to place the hinged cover in any convenient location, including the rear of the fireplace tray." The Board disagreed with the Examiner's "any convenient location" rationale, explaining that the reference taught placing the door in a specific location, different than what was claimed. (Ex parte Brown, BPAI 2011.)

The application on appeal related to a fireplace. A representative claim on appeal read:

1. A removable fireplace cleanout, comprising:
a debris collection tray having a floor pan defining a periphery and a plurality of sidewalls extending upward from the periphery, including a front wall, a rear wall, and first and second lateral sidewalls, the rear wall having an opening defined therein;
a debris dump door panel having an upper edge and a lower edge;
a weight mounted adjacent the lower edge of said debris dump door panel; and
at least one top-mounted hinge pivotally attaching the upper edge of the dump door to the rear wall of the tray,
whereby the dump door closes the opening in the rear wall when the tray is level and swings open by gravity when the tray is tilted so that the rear wall is downward.

The Examiner rejected the claims as obvious over a combination of two references. The first reference, Taylor (see figure below) allegedly taught the claimed tray (20) having walls including a rear wall (26).

More specifically, the Examiner took the position that the door panel (46) in Wagg included a moveable handle cover (60) which operated as a weight. The Examiner also asserted that "the Wagg door is obviously capable of performing those functions [of opening and closing], as the door is hinged and disclosed to be movable." As a reason for adding Wagg's door panel to Taylor's tray, the Examiner offered the benefit of "guid[ng] ashes into the ash retaining enclosure, such as a garbage can."

The Applicant appealed and made several arguments against the combination. In one of these arguments, the Applicant addressed the Examiner's findings about Wagg's door handle acting as the claimed "weight." According to the Application, the arbitrary weight of the door handle would not "close the opening in the real wall when the tray is level" as claimed. Further, the person of skill in the art would have no reason to weight the door appropriately to achieve the claimed function since the only function of Wagg's door handle is to manipulate the door, and increasing the weight of the handle would make this task more difficult. Finally, the Applicant argued that the combination did not teach the specific claimed placement of the hinged door in the rear panel.

In the Answer, the Examiner took the position that the claimed placement of the hinged door was a "matter of design choice" and that "it would be obvious to place the hinged cover in any convenient location, including the rear of the fireplace tray."

The Applicant did not file a Reply Brief.

The Board disagreed with the Examiner's "any convenient location" rationale, explaining that Wagg taught a person of ordinary skill in the art to place the door in a specific location: "over an open end of an ash receiving chamber, in order to seal the ash retaining chamber from the external environment."

The Board also criticized the Examiner for not clearly explaining how Taylor's tray and Wagg's door would be combined. The Board addressed two possible variations of how the Examiner might have modified Taylor with Wagg, and found both of them deficient in either teaching the claimed elements or having a rational reason to combine.

The Board considered the first alternative, in which Wagg's door was placed over the top opening of Taylor's tray, in order to have the hinge top-mounted to seal the ash chamber. But the Board noted that such a modification did not satisfy the claim language of "a rear wall having an opening." Finally, the Board found that the Examiner had improperly treated the "whereby the dump door closes when ... and swings open when ..." as intended use so that Wagg's door need only be capable of performing these functions.

The Board then considered the second alternative, in which Taylor’s tray was modified by Wagg to have an opening in the rear wall, and to have a hinged door cover the opening. But in that case, the Examiner's articulated reasoning of “guid[ing] ashes into the ash retaining enclosure" made no sense, since Wagg did not teach that the door performed this function, and in fact taught a different component for guiding ashes.

My two cents: Is it really this easy to beat a design choice rationale? The Board implied that the design choice rationale was defeated by Wagg's teaching of a specific location for the claimed door panel. Yet almost all design choice rejections are based on modifying a specifically taught location/size/shape/ parameter to produce the claimed feature. So this reasoning surprises me.

I think the Applicant had strong arguments about the claimed weight element, and did a good job of explaining why this feature didn't make sense in the combination proposed by the Examiner.

The Board seemed to reverse using slightly different reasoning that used by the Applicant. That is, the Board didn't mention the weight element, and instead dealt solely with the position of door panel with respect to the rear wall. Here, too, the Board did a good job of explaining why it wouldn't make sense to have Taylor's opening in the rear wall covered by a door panel.

Seems like the Board bent over backwards to understand the Examiner's position on how Taylor's tray was combined with Wagg's door. Could have simply said "Examiner didn't explain how the combined features result in the claimed apparatus" and reverse on those grounds.

Postscript: Unfortunately for the Applicant, it took more than six months after the BPAI's reversal for the Examiner to issue a Notice of Allowance.

I do think that a lot of Examiners throw out the design choice rationale without too much thought. I wouldn't go so far as to say that all such rejections are crap.

>Go read In re Chu.

I'm familiar with In re Chu. I believe it stands for the more limited propositions that a) when the Applicant offers reasons why the claimed feature is more than a design choice, the Board must consider it; and b) such reasons are not required to be included in the Applicant's spec.

If you'd like to explain how In re Chu says something stronger, I'd welcome your explanation.

The fact that an Applicant can overcome a design choice doesn't mean that all such rejections are crap.

In In re Chu, 66 F.3d 292, 36 USPQ2d 1089 (Fed. Cir. 1995), the Federal Circuit held that the Patent and Trademark Office erred in ruling that an applicant's arguments and evidence concerning the advantages of the claimed invention's modification of the prior art should not be considered when the applicant's specification was ''virtually silent'' about the modification's advantages and failed to state that the modification solved any particular problem or achieved an unexpected result.The Federal Circuit stated that '[t]o require [an applicant] to include evidence and arguments in the specification regarding whether [the modification of the prior art] was a matter of 'design choice' would be to require patent applicants to divine the rejections the PTO will proffer when patent applications are filed.”

I was wrong about Chu referring to the use of improper per se rules. That was In re Ochiai, 71 F.3d 1565, 1572, 37 USPQ2d 1127, 1133 (Fed. Cir. 1995) and In re Brouwer, 77 F.3d 422, 425-26, 37 USPQ2d 1663, 1666 (Fed. Cir. 1996) where the Federal Circuit held that the claimed invention as a whole must be evaluated under the standards set down in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), and its progeny, and that the use of per se rules is improper in applying the test for obviousness under 35 U.S.C. 103 since such rules are inconsistent with the fact-specific analysis of claims and prior art mandated by section 103.

It's cases like this that applicants should remember that In re Carreira hold that an inference will not be made in favor of a party carrying the burden of proof when, from the facts of record, other reasonable conclusions are possible. See 189 USPQ 461, 463 (CCPA 1976). Thus, Examiners should not have inferences made in their favor when an applicant can demonstrate that the facts of the record show that other reasonable conclusions are possible.

Design choice rejections are the fillers that Examiners use to reject claims when they can't find a reference disclosing the claimed feature. This allows the Examiner to reject all claims in the FAOM. Whether or not they maintain the rejection in the next OA boils down the Examiner's character.

This should not even be a consideration during examination. The point of the FAOM is not to reject all the claims, i.e. "to build a record." The purpose of the FAOM, and all examination, is to determine whether the claims meet the statutory requirements of patentability. That's all. Nothing more.

Does the reference disclose the identical feature? No. So it doesn't anticipate.

Move to the obviousness analysis.

Can you provide an articulated reasoning with some rational underpinning as to why one of ordinary skill in the art would provide the blodget on the widget in the exact relationship recited in the claim? If not, it's not obvious.

If you're not too busy with all that eye rolling, you might want to peruse the reference and determine if it discloses anything regarding the distance of the blodget from the first face, the second face, and/or the angle of the blodget to the widget (i.e. if any of those may be result effective variables). Maybe then you'd at least have a shred of an argument for obviousness. If not, here's another idea, indicate the claim to be allowable.

"(and nothing else)"

In case you missed it, there's no requirement for the spec to provide anything else. If the features are claimed and the prior art does not anticipate them or render them obvious, the features are allowable. It's not your job to force applicants to "justify" every single feature of their claims before you'll indicate any of them to be allowable. It's your job to do the analysis required by the law and to allow those claims that the applicant is statutorily presumptively entitled to unless you can meet your burden.

Less eye rolling, more analysis. You'll get much higher job satisfaction that way.

"Yet almost all design choice rejections are based on modifying a specifically taught location/size/shape/ parameter to produce the claimed feature. So this reasoning surprises me."

It does? To use the example provided by the eye rolling examiner above, it surprises you that it would not be a "design choice" to modify the prior art to have the exact first and second distances and angle that are claimed? Of the infinite number of distances and angles that are possible, one of ordinary skill in the art would modify the reference to have the EXACT first and second distance and angle that are claimed? Is that magic? Coincidence? Or is it hindsight?

If the proposed "design choice" modification would change the operation of the reference in any way, the rejection is bullsh!t. The BPAI found the examiner's "any convenient location" modification to be exactly that: bullsh!t.

However, the real "reason" for reversing is found on page 6 of the decision (in the paragraph just prior to the DECISION heading): there's no teaching or suggestion for the modification other than applicant's, i.e. the rejection is pure hindsight.

Maybe our eye rolling examiner will remember this decision next time he wonders WHAT TO DO.

>real "reason" for reversing is ...>no teaching or suggestion for the >modification other than >applicant's, i.e. rejection is >pure hindsight.

While your characterization is accurate, as far as it goes, I don't find that classifying the reason for reversal as "hindsight" or even "no rationale for combining" has much explanatory power.

Sure, in the end, the reason for reversing here is "no rationale for combining". But that's just not helpful, because in the end, that's always the reason for any 103 reversal other than a does-not-teach.

In this case, the Examiner did provide two rationales, and the Board tore both of them apart. So I find it more helpful categorize this case as something like "design choice not appropriate" and "Examiner's reason to combine did not actually result in claimed combination."

I do appreciate your comment. I just have a pet peeve about "hindsight".

Hindsight is nothing more than shorthand for "the Examiner must have used hindsight, because we find no reason to combine".

I'm more interested in why the Examiner's reasons were deficient and/or why the Applicant's reasons not to combine are more persuasive.

Put another way, I don't think an Applicant will get far arguing a 103 with "there is no rationale to combine" or "hindsight". Instead, explain why the Examiner's rationale is deficient, or explain why the reasons *not* to combine are stronger than the Examiner's reasons *to* combine.

Disclaimer

Disclaimer: The opinions expressed on this Blog/Web Site ("Blog") are those of the author and do not represent the views of her law firm, colleagues, or clients. The Blog is not legal advice and is offered for educational purposes only. The Blog does not create any attorney-client relationship. Comments posted on the Blog are not treated as confidential; therefore, do not post sensitive information